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Agreement signposts post-Brexit direction on intellectual property

Manufacturers may be worried about what’s going to happen to intellectual property rights once the UK makes the final split from Europe. But David Preece, a Corporate Partner and IP specialist with FBC Manby Bowdler, says an indication from Brexit negotiators about the future of IP rights could be good news for British manufacturers.

David, who works with manufacturers across the Midlands and beyond to help them safeguard their IP, said a recently published draft withdrawal agreement provided an important insight into how EU and Community registered designs are likely to be treated over coming years.

Currently, the EU Trade Marks (EUTM) and Registered Community Designs (RCD) are valid in both the UK and the rest of the EU, which had given rise to questions about their validity after March next year.

But the draft withdrawal agreement includes eight articles relating to intellectual property, and suggests EU-wide rights will be replaced with equivalent UK rights after the end of the transition period.

The draft withdrawal agreement suggests EU-wide rights will be replaced with equivalent UK rights after the end of the transition period / Picture: Getty/iStock

David added: “This detail was much-needed, and helps in understanding the best path to adopt for registrations as we head through Brexit.

“As currently stated, it suggests that separate UK and EU trade mark and registered design applications will not need to be filed, which was the belt and braces approach taken by many, pending an announcement on how conversions would be treated post-Brexit.”

“We do not know whether this conversion will happen automatically, whether it will require action by the holder of the rights, or indeed whether a charge will be levied, but it does give some reassurance that holders of EU trade marks registered before the end of the transition period can expect an enforceable intellectual property right in the UK post-transition, and that the renewal date will be the same.

“Similarly, anyone holding a Community registered design right will become the holder of a UK registered design right.”

It is also expected that a new UK unregistered design right will be created to provide the wider protection currently offered by the EU unregistered design right.

The draft agreement also sets out that protection will continue post-transition for international registrations of trademarks or designs that designate the EU via the Madrid or Hague centralised application systems for registration in multiple jurisdictions.

The UK was already an independent signatory to the Madrid Protocol, and will independently accede to the Hague Agreement in June 2018. The UK will also continue to be a member of WIPO – the World Intellectual Property Organization – that administers these international processes.

FBC Manby Bowdler recommend manufacturers affected by the situation should take a number of steps to ensure they are in the best possible position / Picture: Getty/iStock

David added: “Post-Brexit, alongside any UK registrations, businesses and manufacturers seeking protection in Europe will be able to register an EUTM or RCD to cover all remaining EU Member States.

“However, filing through WIPO may become the simplest option, as it will cover the UK, the EU and countries such as the USA or Japan, with 68 countries signed up to the Hague Agreement and 116 to the Madrid Protocol.”

David said that whilst the situation was still subject to the transition period, it made sense for all companies affected by the situation to take a number of steps to ensure they were in the best possible position. It could be beneficial to set up an IP working party and consider the following steps:

• Draw up an exhaustive list of all the IP you own or license from other bodies and check that you have sufficient protection in place. Don’t forget to include any unregistered rights – such as data and copyright – which can sometimes be easy to overlook. It is good practice to have a full schedule of all rights held and when they are due to be renewed. Renewal dates will transfer across under the new arrangements post-Brexit, but by having a schedule to hand you will be able to plan ahead.• Work through all your contracts which involve an IP license and review the way they are worded with the post-Brexit landscape in mind. Some terms may need to change under the new arrangements – such as those which make specific reference to the EU or its territory, or the payment of EU charges or taxes.• Carry out the same process for any contracts currently being drawn up and check through the wording to ensure it will be appropriate post-Brexit.• Draw up a communications plan for both your own employees and external stakeholders to ensure all the relevant people are kept up to date on the steps you are taking

For national protection, solely within the UK, trademarking, registered designs, patenting and copyright is administered by the Intellectual Property Office (IPO) and governed by the Intellectual Property Act 2014.

As the Brexit negotiations continue, the IPO has said it is keen to hear views on the transitional arrangements from those involved in managing IP issues day-to-day, by emailing EUenquiries@ipo.gov.uk.